Professional Documents
Culture Documents
370
116 S.Ct. 1384
134 L.Ed.2d 577
Syllabus*
See United States v. Detroit Lumber Co., 200 U.S. 321, 337, 26 S.Ct. 282,
287, 50 L.Ed. 499.SC2SPetitioner Markman owns the patent to a system
that tracks clothing through the dry-cleaning process using a keyboard and
data processor to generate transaction records, including a bar code
readable by optical detectors. According to the patent's claim, the portion
of the patent document that defines the patentee's rights, Markman's
product can ''maintain an inventory total'' and ''detect and localize spurious
additions to inventory.'' The product of respondent Westview Instruments,
Inc., also uses a keyboard and processor and lists dry-cleaning charges on
bar-coded tickets that can be read by optical detectors. In this
infringement suit, after hearing an expert witness testify about the
meaning of the claim's language, the jury found that Westview's product
had infringed Markman's patent. The District Court nevertheless directed a
verdict for Westview on the ground that its device is unable to track
''inventory'' as that term is used in the claim. The Court of Appeals
affirmed, holding the interpretation of claim terms to be the exclusive
province of the court and the Seventh A mendment to be consistent with
that conclusion.
Held: The construction of a patent, including terms of art within its claim,
is exclusively within the province of the court. Pp. 1389-1396.SC2S(a)
The Seventh Amendment right of trial by jury is the right which existed
under the English common law when the Amendment was adopted.
Baltimore & Carolina Line, Inc. v. Redman, 295 U.S. 654, 657, 55 S.Ct.
890, 891, 79 L.Ed. 1636. Thus, the Court asks, first, whether infringement
cases either were tried at law at the time of the Founding or are at least
analogous to a cause of action that was. There is no dispute that
infringement cases today must be tried before a jury, as their predecessors
were more than two centuries ago. This conclusion raises a second
question: whether the particular trial issue (here a patent claim's
construction) is necessarily a jury issue. This question is answered by
comparing the modern practice to historical sources. Where there is no
exact antecedent in the common law, the modern practice should be
compared to earlier practices whose allocation to court or jury is known,
and the best analogy that can be drawn between an old and the new must
be sought. Pp. ___-___.
(b) There is no direct antecedent of modern claim construction in the
historical sources. The closest 18th-century analogue to modern claim
construction seems to have been the construction of patent specifications
describing the invention. Early patent cases from England and this Court
show that judges, not juries, construed specification terms. No authority
from this period supports Markman's contention that even if judges were
charged with construing most patent terms, the art of defining terms of art
in a specification fell within the jury's province. Pp. ___-___.
c) Since evidence of common law practice at the time of the Framing does
not entail application of the Seventh Amendment's jury guarantee to the
construction of the claim document, this Court must look elsewhere to
characterize this determination of meaning in order to allocate it as
between judge or jury. Existing precedent, the relative interpretive skills
of judges and juries, and statutory policy considerations all favor
allocating construction issues to the court. As the former patent
practitioner, Justice Curtis, explained, the first issue in a patent case,
construing the patent, is a question of law, to be determined by the court.
The second issue, whether infringement occurred, is a question of fact for
a jury. Winans v. Denmead, 15 How. 330, 338, 14 L.Ed. 717. Contrary to
Markman's contention, Bischoff v. Wethered, 9 Wall. 812, 19 L.Ed. 829,
and Tucker v. Spalding, 13 Wall. 453, 20 L.Ed. 515, neither indicate that
19th-century juries resolved the meaning of patent terms of art nor
undercut Justice Curtis's authority. Functional considerations also favor
having judges define patent terms of art. A judge, from his training and
discipline, is more likely to give proper interpretation to highly technical
patents than a jury and is in a better position to ascertain whether an
expert's proposed definition fully comports with the instrument as a
whole. Finally, the need for uniformity in the treatment of a given patent
The question here is whether the interpretation of a so-called patent claim, the
portion of the patent document that defines the scope of the patentee's rights, is
a matter of law reserved entirely for the court, or subject to a Seventh
Amendment guarantee that a jury will determine the meaning of any disputed
term of art about which expert testimony is offered. We hold th at the
construction of a patent, including terms of art within its claim, is exclusively
within the province of the court.
Markman appealed, arguing it was error for the District Court to substitute its
construction of the disputed claim term 'inventory' for the construction the jury
had presumably given it. The United States Court of Appeals for the Federal
Circuit affirmed, holding the interpretation of claim terms to be the exclusive
province of the court and the Seventh Amendment to be consistent with that
conclusion. 52 F.3d 967 (1995). Markman sought our review on each point, and
we granted certiorari. 515 U.S. ----, 116 S.Ct. 40, 132 L.Ed.2d 921 (1995). We
now affirm.CCSIIDB1S The Seventh Amendment provides that ''[i]n Suits at
common law, where the value in controversy shall exceed twenty dollars, the
right of trial by jury shall be preserved . . . . '' U.S. Const., Amdt. 7. Since
Justice Story's day, United States v. Wonson, 28 F. Cas. 745, 750 (No. 16,750)
(CC Mass. 1812), we have understood that ''[t]he right of trial by jury thus
preserved is the right which existed under the English common law when the
Amendment was adopted.'' Baltimore & Carolina Line, Inc. v. Redman, 295
U.S. 654, 657, 55 S.Ct. 890, 891, 79 L.Ed. 1636 (1935). In keeping with our
long-standing adherence to this ''historical test,'' Wolfram, The Constitutional
History of the Seventh Amendment, 57 Minn. L.Rev. 639, 640-643 (1973), we
ask, first, whether we are dealing with a cause of action that either was tried at
law at the time of the Founding or is at least analogous to one that was, see,
e.g., Tull v. United States, 481 U.S. 412, 417, 107 S.Ct. 1831, 1835, 95 L.Ed.2d
365 (1987). If the action in question belongs in the law category, we then ask
whether the particular trial decision must fall to the ju ry in order to preserve
the substance of the common-law right as it existed in 1791. See infra, at ____.3
* As to the first issue, going to the character of the cause of action, ''[t]he form
of our analysis is familiar. 'First we compare the statutory action to 18thcentury actions brought in the courts of England prior to the merger of the
courts of law and equity.' '' Granfinanciera, S.A. v. Nordberg, 492 U.S. 33, 42,
109 S.Ct. 2782, 2790, 106 L.Ed.2d 26 (1989) (citation omitted). Equally
familiar is the descent of today's patent infringement action from the
infringement actions tried at law in the 18th century, and there is no dispute that
infringement cases today must be tried to a jury, as their predecessors were
more than two centuries ago. See, e.g., Bramah v. Hardcastle, 1 Carp. P.C. 168
(K.B.1789).
B
9
This conclusion raises the second question, whether a particular issue occurring
within a jury trial (here the construction of a patent claim) is itself necessarily a
jury issue, the guarantee being essential to preserve the right to a jury's
resolution of the ultimate dispute. In some instances the answer to this second
question may be easy because of clear historical evidence that the very
subsidiary question was so regarded under the English practice of leaving the
issue for a jury. But when, as here, the old practice provides no clear answer,
see infra, at __-__, we are forced to make a judgment about the scope of the
Seventh Amendment guarantee without the benefit of any foolproof test.DB1S
The Court has repeatedly said that the answer to the second question ''must
depend on whether the jury must shoulder this responsibility as necessary to
preserve the 'substance of the common-law right of trial by jury. ' '' Tull v.
United States, supra, at 426, 107 S.Ct., at 1840 (emphasis added) (quoting
Colgrove v. Battin, 413 U.S. 149, 156, 93 S.Ct. 2448, 2452, 37 L.Ed.2d 522
(1973)); see also Baltimore & Carolina Line, supra, at 657, 55 S.Ct., at 891. ''
'Only those incidents which are regarded as fundamental, as inherent in and of
the essence of the system of trial by jury, are placed beyond the reach of the
legislature.' '' Tull v. United States, supra, at 426, 107 S.Ct., at 1840 (citations
omitted); see also Galloway v. United States, 319 U.S. 372, 392, 63 S.Ct. 1077,
1088, 87 L.Ed. 1458 (1943).
10
The ''substance of the common-law right'' is, however, a pretty blunt instrument
for drawing distinctions. We have tried to sharpen it, to be sure, by reference to
the distinction between substance and procedure. See Baltimore & Carolina
Line, supra, at 657, 55 S.Ct., at 891; see also Galloway v. United States, supra,
at 390-391, 63 S.Ct., at 1087-1088; Ex parte Peterson, 253 U.S. 300, 309, 40
S.Ct. 543, 546, 64 L.Ed. 919 (1920); Walker v. New Mexico & Southern Pacific
R. Co., 165 U.S. 593, 596, 17 S.Ct. 421, 422, 41 L.Ed. 837 (1897); but see Sun
Oil Co. v. Wortman, 486 U.S. 717, 727, 108 S.Ct. 2117, 2124, 100 L.Ed.2d 743
(1988). We have also spoken of the line as one between issues of fact and law.
See Baltimore & Carolina Line, supra, at 657, 55 S.Ct., at 891; see also Ex
parte Peterson, supra, at 310, 40 S.Ct., at 546; Walker v. New Mexico &
Southern Pacific R. Co., supra, at 597, 17 S.Ct., at 422; but see Pullman-
Standard v. Swint, 456 U.S. 273, 288, 102 S.Ct. 1781, 1789, 72 L.Ed.2d 66
(1982).DB1S But the sounder course, when available, is to classify a mongrel
practice (like construing a term of art following receipt of evidence) by using
the historical method, much as we do in characterizing the suits and actions
within which they arise. Where there is no exact antecedent, the best hop e lies
in comparing the modern practice to earlier ones whose allocation to court or
jury we do know, cf. Baltimore & Carolina Line, supra, at 659, 660, 55 S.Ct.,
at 892, 893; Dimick v. Schiedt, 293 U.S. 474, 477, 482, 55 S.Ct. 296, 297, 79
L.Ed. 603 (1935), seeking the best analogy we can draw between an old and
the new, see Tull v. United States, supra, at 420-421, 107 S.Ct., at 1836-1837
(we must search the English common law for ''appropriate analogies'' rather
than a ''precisely analogous common-law cause of action'').CCSCDB1S ''Prior
to 1790 nothing in the nature of a claim had appeared either in British patent
practice or in that of the American states,'' Lutz, Evolution of the Claims of U.S.
Patents, 20 J. Pat. Off. Soc. 134 (1938), and we have accordingly found no
direct antecedent of modern claim construction in the historical sources. Claim
practice did not achieve statutory recognition until the passage of the Act of
1836, Act of July 4, 1836, ch. 357, 6, 5 Stat. 119, and inclusion of a claim did
not become a statutory requirement until 1870, Act of July 8, 1870, ch. 230,
26, 16 Stat. 201; see 1 A. Deller, Patent Claims 4, p. 9 (2d ed.1971).
Although, as one historian has observed, as early as 1850 ''judges were . . .
beginning to express more frequently the idea that in seeking to ascertain the
invention 'claimed' in a patent the inquiry should be limited to interpreting the
summary, or 'claim,' '' Lutz, supra, at 145, ''[t]he idea that the claim is just as
important if not more important than the description and drawings did not
develop until the Act of 1870 or thereabouts.'' Deller, supra, 4, at 9.
11
At the time relevant for Seventh Amendment analogies, in contrast, it was the
specification, itself a relatively new development, H. Dutton, The Patent
System and Inventive Activity During the Industrial Revolution, 1750-1852, pp.
75-76 (1984), that represented the key to the patent. Thus, patent litigation in
that early period was typified by so-called novelty actions, testing whether ''any
essential part of [the patent had been] disclosed to the public before,'' Huddart
v. Grimshaw, Dav. Pat. Cas. 265, 298 (K.B.1803), and ''enablement'' cases, in
which juries were asked to determine whether the specification described the
invention well enough to allow members of the appropriate trade to reproduce
it, see, e.g., Arkwright v. Nightingale, Dav. Pat. Cas. 37, 60 (C.P. 1785).
12
Markman seeks to supply what the early case reports lack in so many words by
relying on decisions like Turner v. Winter, 1 T.R. 602, 99 Eng. Rep. 1274
(K.B.1787), and Arkwright v. Nightingale, Dav. Pat. Cas. 37 (C.P. 1785), to
argue that the 18th-century juries must have acted as definers of patent terms
just to reach the verdicts we know they rendered in patent cases turning on
enablement or novelty. But the conclusion simply does not follow. There is no
more reason to infer that juries supplied plenary interpretation of writtn
instruments in patent litigation than in other cases implicating the meaning of
documentary terms, and we do know that in other kinds of cases during this
period judges, not juries, ordinarily construed written documents.7 The
probability that the judges were doing the same thing in the patent litigation of
the time is confirmed by the fact that as soon as the English reports did begin to
describe the construction of patent documents, they show the judges construing
the terms of the specifications. See Bovill v. Moore, Dav. Pat. Cas. 361, 399,
404 (C.P. 1816) (judge submits question of novelty to the jury only after
explaining some of the language and ''stat[ing] in what terms the specification
runs''); cf. Russell v. Cowley & Dixon, Webs. Pat. Cas. 457, 467-470
III
15
Since evidence of common law practice at the time of the Framing does not
entail application of the Seventh Amendment's jury guarantee to the
construction of the claim document, we must look elsewhere to characterize
this determination of meaning in order to allocate it as between court or jury.
We accordingly consult existing precedent10 and consider both the relative
interpretive skills of judges and juries and the statutory policies that ought to be
furthered by the allocation.
16
* The two elements of a simple patent case, construing the patent and
18
In order to resolve the Bischoff suit implicating the construction of rival patents,
we considered ''whether the court below was bound to compare the two
specifications, and to instruct the jury, as a matter of law, whether the
inventions therein described were, or were not, identical.'' 9 Wall., at 813
(statement of the case). We said it was not bound to do that, on the ground that
investing the court with so dispositive a role would improperly eliminate the
jury's function in answering the ultimate question of infringement. On that
ultimate issue, expert testimony had been admitted on ''the nature of the various
mechanisms or manufactures described in the different patents produced, and as
to the identity or diversity between them.'' Id., at 814. Although the jury's
consideration of that expert testimony in resolving the question of infringement
was said to impinge upon the well-established principle ''that it is the province
of the court, and not the jury, to construe the meaning of documentary
evidence,'' id., at 815, we decided that it was not so. We said that
19
20
Bischoff
does not then, as Markman contends, hold that the use of expert testimony
about the meaning of terms of art requires the judge to submit the question of their
construction to the jury. It is instead a case in which the Court drew a line between
issues of document interpretation and product identification, and held that expert
testimony was properly presented to the jury on the latter, ultimate issue, whether
the physical objects produced by the patent were identical. The Court did not see the
decision as bearing upon the appropriate treatment of disputed terms. As the opinion
emphasized, the Court's ''view of the case is not intended to, and does not, trench
upon the doctrine that the construction of written instruments is the province of the
court alone. It is not the construction of the instrument, but the character of the thing
invented, which is sought in questions of identity and diversity of inventions. '' Id., at
816 (emphasis added). Tucker, the second case proffered by Markman, is to the
same effect. Its reasoning rested expressly on Bischoff, and it just as clearly noted
that in addressing the ultimate issue of mixed fact and law, it was for the court to
''lay down to the jury the law which should govern them.'' Tucker, supra, at 455. 12
21
If the line drawn in these two opinions is a fine one, it is one that the Court has
drawn repeatedly in explaining the respective roles of the jury and judge in
patent cases,13 and one understood by commentators writing in the aftermath of
the cases Markman cites. Walker, for example, read Bischoff as holding that the
question of novelty is not decided by a construction of the prior patent, ''but
depends rather upon the outward embodiment of the terms contained in the
[prior patent]; and that such outward embodiment is to be properly sought, like
the explanation of latent ambiguities arising from the description of external
things, by evidence in pais. '' A. Walker, Patent Laws 75, p. 68 (3d ed. 1895).
He also emphasized in the same treatise that matters of claim construction, even
those aided by expert testimony, are questions for the court:
22
''Questions of construction are questions of law for the judge, not questions of
fact for the jury. As it cannot be expected, however, that judges will always
possess the requisite knowledge of the meaning of the terms of art or science
used in letters patent, it often becomes necessary that they should avail
themselves of the light furnished by experts relevant to the significance of such
words and phrases. The judges are not, however, obliged to blindly follow such
testimony.'' Id., 189, at 173 (footnotes omitted).
23
Virtually
the same description of the court's use of evidence in its interpretive role
was set out in another contemporary treatise:
24
26
The construction of written instruments is one of those things that judges often
do and are likely to do better than jurors unburdened by training in exegesis.
Patent construction in particular ''is a special occupation, requiring, like all
others, special training and practice. The judge, from his training and
discipline, is more likely to give a proper interpretation to such instruments
than a jury; and he is, therefore, more likely to be right, in performing such a
duty, than a jury can be expected to be.'' Parker v. Hulme, 18 F. Cas., at 1140.
Such was the understanding nearly a century and a half ago, and there is no
reason to weigh the respective strengths of judge and jury differently in relation
to the modern claim; quite the contrary, for ''the claims of patents have become
highly technical in many respects as the result of special doctrines relating to
the proper form and scope of claims that have been developed by the courts and
the Patent Office.'' Woodward, Definiteness and Particularity in Patent Claims,
46 Mich. L.Rev. 755, 765 (1948).
27
Markman would trump these considerations with his argument that a jury
should decide a question of meaning peculiar to a trade or profession simply
because the question is a subject of testimony requiring credibility
determinations, which are the jury's forte. It is, of course, true that credibility
judgments have to be made about the experts who testify in patent cases, and in
theory there could be a case in which a simple credibility judgment would
suffice to choose between experts whose testimony was equally consistent with
a patent's internal logic. But our own experience with document construction
leaves us doubtful that trial courts will run into many cases like that. In the
main, we expect, any credibility determinations will be subsumed within the
necessarily sophisticated analysis of the whole document, required by the
standard construction rule that a term can be defined only in a way that
comports with the instrument as a whole. See Bates v. Coe, 98 U.S. 31, 38, 25
L.Ed. 68 (1878); 6 Lipscomb 21:40, at 393; 2 Robinson, supra, 734, at 484;
Woodward, supra, at 765; cf. U.S. Industrial Chemicals, Inc. v. Carbide &
Carbon Chemicals Corp., 315 U.S. 668, 678, 62 S.Ct. 839, 844, 86 L.Ed. 1105
(1942); cf. 6 Lipscomb at 21:40, at 393. Thus, in these cases a jury's
capabilities to evaluate demeanor, cf. Miller, supra, at 114, 117, 106 S.Ct., at
451, 453, to sense the ''mainsprings of human conduct,'' Commissioner v.
Duberstein, 363 U.S. 278, 289, 80 S.Ct. 1190, 1198, 4 L.Ed.2d 1218 (1960), or
to reflect community standards, United States v. McConney, 728 F.2d 1195,
1204 (C.A.9 1984) (en banc), are much less significant than a trained ability to
evaluate the testimony in relation to the overall structure of the patent. The
decisionmaker vested with the task of construing the patent is in the better
position to ascertain whether an expert's proposed definition fully comports
with the specification and claims and so will preserve the patent's internal
coherence. We accordingly think there is sufficient reason to treat construction
of terms of art like many other responsibilities that we cede to a judge in the
normal course of trial, notwithstanding its evidentiary underpinnings.
D
28
created the Court of Appeals for the Federal Circuit as an exclusive appellate
courts for patent cases, H.R.Rep. No. 97-312, pp. 20-23 (1981), observing that
increased uniformity would ''strengthen the United States patent system in such
a way as to foster technological growth and industrial innovation.'' Id., at 20.
29
***
30
31
Accordingly, we hold that the interpretation of the word ''inventory'' in this case
is an issue for the judge, not the jury, and affirm the decision of the Court of
Appeals for the Federal Circuit.
It is so ordered.
32
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader. See
United States v. Detroit Lumber Co., 200 U. S. 321, 337.
Thus, for example, a claim for a ceiling fan with three blades attached to a solid
rod connected to a motor would not only cover fans that take precisely this
form, but would also cover a similar fan that includes some additional feature,
e.g., such a fan with a cord or switch for turning it on and off, and may cover a
product deviating from the core design in some noncritical way, e.g., a threebladed ceiling fan with blades attached to a hollow rod connected to a motor. H.
Schwartz, Patent Law and Practice 81-82 (2d ed.1995).
Dependent claim 10 specifies that, in the invention of claim 1, the input device
is an alpha-numeric keyboard in which single keys may be used to enter the
attributes of the items in question.
Our formulations of the historical test do not deal with the possibility of
conflict between actual English common law practice and American
assumptions about what that practice was, or between English and American
practices at the relevant time. No such complications arise in this case.
Before the turn of the century, ''no more than twenty-two cases came before the
superior courts of London.'' H. Dutton, The Patent System and Inventive
Activity During the Industrial Revolution, 1750-1852, p. 71 (1984).
See, e.g., Boulton and Watt v. Bull, 2 H. Bl. 463, 491, 126 Eng. Rep. 651, 665
(C.P. 1795) (Eyre, C.J.) (''Patent rights are no where that I can find accurately
discussed in our books''); Dutton, supra, n. 3, at 70-71 (quoting Abraham
Weston as saying ''it may with truth be said that the [Law] Books are silent on
the subject [of patents] and furnish no clue to go by, in agitating the Question
What is the Law of Patents?'').
See, e.g., Devlin, Jury Trial of Complex Cases: English Practice at the Time of
the Seventh Amendment, 80 Colum L.Rev. 43, 75 (1980); Weiner, The Civil
Jury Trial and the Law-Fact Distinction, 54 Calif.L.Rev. 1867, 1932 (1966).
For example, one historian observed that it was generally the practice of judges
in the late 18th century ''to keep the construction of writings out of the jury's
hands and reserve it for themselves,'' a ''safeguard'' designed to prevent a jury
from ''constru[ing] or refin[ing] it at pleasure.'' 9 J. Wigmore, Evidence 2461,
p. 194 (J. Chadbourn rev. ed.1981) (emphasis in original; internal quotation
10
11
See 1 A Memoir of Benjamin Robbins Curtis, L L. D., 84 (B. Curtis ed. 1879);
cf. O'Reilly v. Morse, 15 How. 62, 63, 14 L.Ed. 601 (1854) (noting his
involvement in a patent case).
12
See, e.g., Coupe v. Royer, 155 U.S. 565, 579-580, 15 S.Ct. 199, 205, 39 L.Ed.
263 (1895); Silsby v. Foote, 14 How. 218, 226, 14 L.Ed. 391 (1853); Hogg v.
Emerson, 6 How. 437, 484, 12 L.Ed. 505 (1848); cf. Brown v. Piper, 91 U.S.
37, 41, 23 L.Ed. 200 (1875); Winans v. New York & Erie R. Co., 21 How. 88,
100, 16 L.Ed. 68 (1859); cf. also U.S. Industrial Chemicals, Inc. v. Carbide &
Carbon Chemicals Corp., 315 U.S. 668, 678, 62 S.Ct. 839, 844, 86 L.Ed. 1105
(1942)